Appeal 2007-0693
Application 10/188,519
1 Supreme Court has expressly rejected “obvious to try” as a “constricted
2 analysis.” KSR, 127 S. Ct. at ___, 82 USPQ2d at 1397 (“[A] patent claim
3 cannot be proved obvious merely by showing that the combination of
4 elements was ‘obvious to try.’...When there is a design need or market
5 pressure to solve a problem and there are a finite number of identified,
6 predictable solutions, a person of ordinary skill has good reason to pursue
7 the known options within his or her technical grasp. If this leads to the
8 anticipated success, it is likely the product not of innovation but of ordinary
9 skill and common sense.”).
10 Appellants urge that the data tabulated in Table 17 (Specification 37)
11 demonstrate that the claimed range of 70-95% ethylene-propylene content is
12 critical. (Br. 14.) Specifically, Appellants argue that the data show that the
13 discharge capacity at -20 degC (mAh)2 drops significantly when the
14 ethylene propylene content of the binder is less than 70%. They further
15 assert that when the ethylene-propylene content exceeds 95%, the electrode
16 strength3 drops to an unacceptable level.
2 According to the present Specification, “low-temperature discharge
characteristic was assessed by discharging at a constant discharge current of
900 mA until a discharge termination voltage of 3.0 V is reached after a
constant-current constant-voltage charging at a charging current of 630 mA
at a charging voltage of 4.2 V for a charging time of 2 hours in a -20 degrees
C environment.” (Specification 13:5-9.)
3 According to the present Specification, “[s]trength of the negative
electrode was tested by applying 1.5 cm-square cellophane adhesive tape on
the surface of the negative electrode and measuring the force required to
peel off the negative electrode mix...” (Specification 13: 9-11.) No further
explanation is given on how the force is determined. Rexnord Corp. v.
Laitram Corp., 274 F.3d 1336, 1343, 60 USPQ2d 1851, 1855 (Fed. Cir.
18
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